Appeal No. 2002-1926 Page 5
Application No. 08/693,353
Similarly, independent product claim 42 is directed to a “cell-free Micrococcus varians
culture-medium-supernatant composition comprising a bacteriocin which has agar well
incubation inhibition test activity against bacterial strains including Listeria
monocytogenes.” Claim 45, the only other independent claim, is directed to a
bacteriocin having a sequence identical to the bacteriocin isolated from deposited
strains CNCM I-1586 and CNCM I-1587, or one differing by “from 1 to 4 amino acids.”
The specification identifies two strains of Micrococcus varians that produce a
bacteriocin capable of inhibiting Listeria monocytogenes in agar well inhibition tests,
and also outlines a straightforward protocol for determining whether other strains of
Micrococcus varians do as well (specification, pages 7-8). One skilled in the art, having
“in-hand” the knowledge that some strains of Micrococcus varians produce a
bacteriocin capable of inhibiting Listeria monocytogenes, need only subject a given
strain of Micrococcus varians to an agar well inhibition test to determine whether it
could be used to practice the invention. It may be, as the examiner argues, that
“activity must be determined empirically and cannot be predicted a priori” (Answer,
page 7), but the fact that some experimentation would be required, and some of the
experimentation would produce negative results, is not enough to establish that the
experimentation would be undue. Nor is it the function of the claims to specifically
exclude possibly inoperative embodiments. Nothing in the examiner’s analysis
establishes that the number of inoperative embodiments would be significant enough to
force one of ordinary skill in the art to experiment unduly in order to practice the claimed
invention. See Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569,
1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984).
Finally, the examiner’s rationale does not begin to come to grips with those
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007